10 Years Later – A Look at the Efficacy of the Pre-Appeal Brief Conference Program

uspto-main-copyWhether an invention is patented can dramatically influence a company’s market share and investment attraction. Thus, this outcome can affect the money, time and effort that decision-makers at the company are willing to invest in the research, development and marketing of the technology and may even influence whether the company is to exist at all (or is alternatively never formed or does not survive). No matter how critical a patent is, the outcome lies primarily in one person’s hand, and that person is the examiner who happened to be assigned to examine the application.

If a patent applicant and examiner reach an impasse, the patent applicant may appeal pending rejections, via an ex parte appeal, to the Patent and Trial Appeal Board (PTAB). However, the costs of this strategy are high. In terms of financial costs, the large-entity USPTO fees are $800 for filing a Notice of Appeal and $2,000 for having the appeal considered by the Board[1], and the median attorney fees at large firms for drafting the Appeal Brief is $5,000.[2] Thus, the total cost for filing an appeal is typically around $8,000. In terms of time, the average time between a Notice of Appeal filing and PTAB decision is 36 months.[3] Thus, money or time constraints may make an appeal an economically unfeasible option.

Nearly exactly a decade ago, the USPTO established a third option: Rather than interacting with a sole decision-maker, and rather than incurring the resource expenses of an appeal, an applicant could request that an examiner’s rejections be considered in a Pre-Appeal Brief Conference.[4] This program was designed to allow an applicant to avoid the full appeal process and PTAB consideration when “rejections of record are clearly not proper and without basis”. To be considered for the program, the applicant is to file (with a Notice of Appeal): (1) a request (e.g., a completed USPTO “Pre-Appeal Brief Request for Review”); and (2) a five-page or less set of arguments for which the review is being requested. Aside from the fee now required for the Notice of Appeal, no additional fee is required for the Pre-Appeal Brief Conference program.

For each request, a supervisor will designate a panel of examiners to review the request. The panel will include at least a supervisor (frequently the supervisor of the application’s art unit) and the examiner of record. The panel may include an additional examiner (or supervisor) from a same or different art unit. The panel is to reach one of four decisions:

  • The application is to proceed for consideration by the PTAB due to there being at least one actual issue for appeal.
  • Prosecution is to be reopened, such that a new Office Action is typically to follow.
  • The application is allowed.
  • The request was defective.

Should applicants be using this program? The program appears to provide an opportunity for an applicant to avoid the monetary and time expenses of a full PTAB appeal and is not itself accompanied by a fee. However, the program requires the applicant to generate another document for consideration, which may correspond to additional attorney fees. (Notably, though, such additional fees may be relatively inexpensive due to the required brevity of the arguments and the opportunity to recycle the arguments for an Appeal Brief. Further, the program could further increase the total delay of a PTAB decision. That is, a successful Pre-Appeal Brief Conference would save an applicant time and money, and an unsuccessful Pre-Appeal Brief Conference would cost an applicant time and money. Thus, determining whether the program should be used requires analyzing empirical data to determine the probability that a Pre-Appeal Brief Conference is successful.

 

Only 6% of Pre-Appeal Conferences Decisions are that an Application is Allowable

To investigate the empirical data behind the Pre-Appeal Brief Conference Program (or “Pre-Appeal Program”), we submitted a Freedom of Information Act request to the USPTO. We requested, for each request for the Pre-Appeal Program for which a decision had been made, that the application number, art unit, request date, application’s current status and pre-appeal conference decision be identified.[5] We analyzed the data corresponding to non-defective requests (n=85,506). FIG. 1 shows the distribution of the decisions.

 

FIG. 1: Distribution of Pre-Appeal Program Decisions.

FIG. 1: Distribution of Pre-Appeal Program Decisions.

For 61% of the non-defective requests, the panel decided that there was an actual issue for appeal, such that the applicant would either need to file an Appeal Brief, reengage the Examiner or abandon the application. The decisions do not include any substance (e.g., analysis insight) aside from the decision itself, such that – for these 61% of applications – the request resulted in time and money and not producing any result to facilitate a patent allowance.

For only 6% of requests were the panel decisions that an application was to be allowed.

For 33% of the non-defective requests, the panel decided that prosecution was to be reopened. Reopening prosecution likely indicates that a rejection of record was improper, but that the panel opined that another rejection was appropriate. Is this a “win” for the applicant? While a contested rejection is likely overcome, the applicant is positioned so as to once again receive rejections from a same examiner who with the applicant previously had difficulty.

To further investigate whether reopening prosecution is a result favorable for an applicant, we segregated the request data based on the decision and generated distributions for each decision type of the applications’ current status: patented, abandoned or pending. (See FIG. 2.) 67.4% of the applications having received a reopen-prosecution decision are currently patented, as compared to only 39.3% of those with decisions indicating that the Board would need to consider the arguments. Because the final status of the pending applications is yet undetermined, it may be instructive to identify the percentage of final dispositions that are patented. Amongst applications for which the panel found an appealable issue, 58.0% of the finally disposed applications are patents, while 79.5% of the finally disposed applications for prosecution was reopened are patents. Thus, in general, it appears as though this intermediate decision corresponds to rather strong patent prospects, which slightly exceed the overall USPTO allowance rates.

 

FIG. 2: Pre-Appeal Program Data by Year of Request Filing. A: The number of non-defective Pre-Appeal Brief Requests per calendar year that the requests were filed. The distributions of decisions for each year’s requests is also identified based on the color in the stacked bar graph. B: The same decision distributions shown in Subplot A is shown but using a normalized vertical scale.

FIG. 2: Pre-Appeal Program Data by Year of Request Filing. A: The number of non-defective Pre-Appeal Brief Requests per calendar year that the requests were filed. The distributions of decisions for each year’s requests is also identified based on the color in the stacked bar graph. B: The same decision distributions shown in Subplot A is shown but using a normalized vertical scale.

 

Year-over-Year Analysis

We further segregated our data based on the calendar year of the request. FIG. 3A shows the number of non-defective requests per year. FIGS. 3A and 3B show the distribution of decisions per year, either in an unnormalized (FIG. 3A) or normalized (FIG. 3B) representation.

FIG. 3A shows that the program grew in popularity during its first five years. However, the popularity has seemingly dwindled in recent years. These dynamics seem to closely follow the fluctuations in the number of appeal briefs received at the Board.[6] (See FIG. 3B.)

FIGS. 3A and 3C show that there have been modest changes in the decision distributions. In 2006, 4.9% of the decisions were that an application was allowable. That percentage dropped to 2.5% in 2008 and was 7.7% in 2015. Meanwhile, the percentage of decisions indicating that an actual issue exists for appeal (and thus is suitable for PTAB consideration) has dramatically and steadily increased throughout the years: from 56.9% in 2006 to 68.6% in 2015 (a 20% increase).

 

FIG. 3: Pre-Appeal Program Data by Year of Request Filing. A: The number of non-defective Pre-Appeal Brief Requests per calendar year that the requests were filed. The distributions of decisions for each year’s requests is also identified based on the color in the stacked bar graph. B: The number of appeals received at the Board in each fiscal year. C: The same decision distributions shown in Subplot A is shown but using a normalized vertical scale.

FIG. 3: Pre-Appeal Program Data by Year of Request Filing. A: The number of non-defective Pre-Appeal Brief Requests per calendar year that the requests were filed. The distributions of decisions for each year’s requests is also identified based on the color in the stacked bar graph. B: The number of appeals received at the Board in each fiscal year. C: The same decision distributions shown in Subplot A is shown but using a normalized vertical scale.

 

Analysis by the Technology-Center

We also segregated our data based on the technology center (TC) of the application. TC 3600 was further separated into business method (BM) art units (art units 3621-29 and 3681-96) and other art units. FIG. 4A shows the number of non-defective requests per TC. FIGS. 4A and 4B show the distribution of decisions per TC, either in an unnormalized (FIG. 4A) or normalized (FIG. 4B) representation.

Relatively few requests were received in TC 1600, which is consistent with the relatively low number of appeal briefs filed in TC 1600.[7] (See FIG. 4A.) Meanwhile, the most requests were filed in TC 2600, which, interestingly, is not one of the top TCs for appeal brief filings.

Despite the small number of filings in TC 1600, the fraction of decisions that withdrew rejections was highest for this TC – reaching 15.0%. (See FIG. 4B.) This probability was over five times that of the business method art units, where the allowability probability was only 2.9%.

 

FIG. 4: Pre-Appeal Program Data by Application’s Technology Center. A: The number of non-defective Pre-Appeal Brief Requests per technology center (TC). TC 3600 is divided into the business method (BM) art units (3621-29 and 3681-96) and the other art units. The distributions of decisions for each TC’s requests is also identified based on the color in the stacked bar graph. B: The same decision distributions shown in Subplot A is shown but using a normalized vertical scale.

FIG. 4: Pre-Appeal Program Data by Application’s Technology Center. A: The number of non-defective Pre-Appeal Brief Requests per technology center (TC). TC 3600 is divided into the business method (BM) art units (3621-29 and 3681-96) and the other art units. The distributions of decisions for each TC’s requests is also identified based on the color in the stacked bar graph. B: The same decision distributions shown in Subplot A is shown but using a normalized vertical scale.

 

Art Units’ Allowance Rates Predictive of Pre-Appeal Conference Decisions

It is perhaps unsurprising that the business-method art units correspond to the least satisfying Pre-Appeal Program results. These art units are known to have exceedingly low allowance rates. Given that at least two members of a panel considering the request are likely within the same low-allowance-rate art unit, one may expect that the overall low allowance rate would also translate into a low pre-appeal conference allowance rate.

To further investigate the relationship between art unit allowance rates and Pre-Appeal Program decisions, we used  LexisNexis® Patent AdvisorSM to identify an allowance rate for each art unit based on the number of patents issued and the number of abandonments from May 2013 to May 2015. We then assigned each request to one of five brackets depending on the art unit allowance rate, and we generated an outcome distribution for each of these allowance-rate brackets.

As shown in FIG. 5, pre-appeal brief conferences are generally most favorable for applicants in the higher allowance rate art units. The probability that an application will be allowed in the lowest art-unit allowance-rate bracket was 1.2%, whereas the probability was 7.3% for the highest art-unit allowance-rate bracket. Similarly, the probability that the decision was that an appeal should proceed to the Board was 77.9% for the lowest art-unit allowance-rate bracket and 57.3% for the highest art-unit allowance-rate bracket.

 

FIG. 5: Pre-Appeal Brief Conference Decision Distributions for Art Unit Allowance-Rate Brackets. For each request, the allowance rate of the assigned art unit was identified and used to assign data for the request to one of five art unit allowance-rate brackets. The request data for each bracket was then used to identify a distribution of decisions, which is represented by the color in the stacked bar graph.

FIG. 5: Pre-Appeal Brief Conference Decision Distributions for Art Unit Allowance-Rate Brackets. For each request, the allowance rate of the assigned art unit was identified and used to assign data for the request to one of five art unit allowance-rate brackets. The request data for each bracket was then used to identify a distribution of decisions, which is represented by the color in the stacked bar graph.

 

Conclusion

The Pre-Appeal Program remains a cost-effective weapon in the patent practitioner’s arsenal, if wielded wisely. For only the Notice of Appeal fee ($800 for large entities) and what should be relatively-modest attorney’s fees[8], an applicant receives the benefit of two additional “sets of eyes” reviewing the validity of the standing rejection. With 39% of requests resulting in direct allowance (6%) or re-opening of prosecution (33%, with more than half of those being ultimately allowed), it’s hard to argue there’s no ROI. And re-opening of prosecution generally results in more relevant prior art during prosecution that, once overcome, produces a more enforceable patent (i.e., less likely to be invalidated in litigation), which is what every applicant should want.

Even where the panel decides a case should proceed to PTAB, having this additional data point (i.e., the panel supports the rejection) may make participation in the Pre-Appeal Program a worthwhile endeavor. Armed with this data identifying multi-examiner support of the rejection, the applicant may make a more-informed decision to proceed with the appeal, submit new claim amendments (upon filing an RCE) or abandon the application. Decisions to amend the claims or abandon the application may result in a savings of the additional costs associated with the appeal, which may then be used to support other portions of the applicant’s patent portfolio.

But the Pre-Appeal Program is not a panacea. Because success rates correlate strongly to the applicable art units’ allowance rates, applicants should think carefully when their cases are in less favorable units. In such cases, time and money may be better spent directly with the PTAB, or on other post-final strategies.

In sum, the data indicates that the Pre-Appeal Program is an option that should strongly be considered whenever an applicant is facing a final rejection.

_______________________

[1] USPTO. USPTO Fee Schedule.

[2] AIPLA. Report of the Economic Survey, 2013: I-1117.

[3] USPTO. FY 2013 Performance Measures.

[4] USPTO. New pre-appeal brief conference pilot programOfficial Gazette 2005.

[5] The FOIA response identified four unique decisions: “Request Defective”, “Rejection withdrawn”, “Reopen prosecution”, and “Proceed to BPAI”. We assumed that “Rejection withdrawn” corresponded to the “Allowed” type of decision identified in the Federal Register notice for the program.

[6] USPTO. PTAB/BPAI Statistics Archive Page.

[7] Gaudry KS, Grab L, McKeon T. 2015. Trends in subject matter eligibility for biotechnology inventionsIPWatchDog.

[8] Unless the final rejection cited new art, the 5-page request should mostly be a re-formatting of the most recent office action response. And if the case proceeds to appeal, the fees may be at least partially recovered in reduced appellate brief fees.

The Author

Karl Fazio & Kate Gaudry

Karl Fazio & Kate Gaudry  

Karl Fazio is an entrepreneurial, results-oriented tech sector legal executive with over 16 years of experience developing, driving, and implementing legal strategy and tactics as a chief intellectual property and patent counsel, general counsel, and civil and criminal litigator. Trusted advisor and partner to business units, dedicated to “rolling up the sleeves” and delivering legal solutions that accomplish business goals while mitigating risk. Acknowledged by peers, subordinates, and senior management as a stabilizing force capable of gracefully managing the chaos that is the tech business environment. Experience includes guiding GoDaddy from startup through private equity investment through IPO, preparing and prosecuting over 100 patent applications, and litigating and managing complex litigation.

Kate Gaudry, focuses her practice on patent prosecution and counseling, with an emphasis on software, computer systems, and quantitative biology. Dr. Gaudry also routinely performs statistical analysis of clients’ patent portfolios to identify effective prosecution strategies. Further, Dr. Gaudry regularly empirically evaluates programs and performance of the United States Patent and Trademark Office so as to provide her clients with prosecution recommendations and to advocate for compact and fair examination. Her publications are representative of such efforts.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 17 Comments comments.

  1. David Stein July 22, 2015 12:10 am

    The real problem with the entire appeal process is simple: examiners have no fear of having their rejections reversed.

    Consider what the appeal process looks like to examiners:

    * Examiner gets production credit for copying-and-pasting the last rejection into the Examiner’s Answer Brief, and yet more credit in presenting the same argument during the Pre-Appeal Conference.

    * Examiner then gets to flush the case out of his or her docket for 3+ years while the Board sits on the briefs. Doesn’t even have to think about it – it’s just gone.

    * If, at the end of that lengthy process, the examiner gets reversed… oh well, reopen prosecution and issue a new rejection. The worst repercussion for the examiner is a bruised ego. Otherwise, it’s just another day at the office.

    * As a bonus, the examiner gets the satisfaction that this troublemaking applicant is getting punished with extensive fees, and with lengthy delays in the patent process, and a significant loss of patent term if the examiner happens to win – which, given the examiner-friendly attitude of the PTAB, is pretty likely.

    So why shouldn’t examiners just love the appeal process? It’s a great way to rack up production credit easily, and it’s gigantic stick that they can use to force applicants into submission and punish applicants who aren’t compliant. There is literally no down side to the examiners in this process.

  2. Karl Fazio July 22, 2015 1:36 am

    I honestly have never seen a reversal result in a new rejection – always a NOA.

  3. Anon July 22, 2015 7:00 am

    Consider yourself lucky then Karl.

    I have seen plenty – including plenty with even more inapt art cited, as well as those that exhibit unauthorized searches (searches performed without approval, or with approval dated after the search dates) and go well beyond the scope of “rechecking” past searches.

    An unlimited bites at the apple with no “repercussion” creates a lack of sense of accountability for doing the job right the first time through.**

    However, this lack of accountability is by no means limited to appeals and the appeals process. In fact, the Dudas era was rather famous for creating a one-way sense of “accountability” in that mistakes by rejections were just not scrutinized (or accountability made to be held) as were mistakes by allowance. This created the (quite natural) reaction of Reject-Reject-Reject, which has effects to this day in the size of the various backlogs at the Office – not to mention the views that persist in attempting to denigrate the person who came in and put a stop to the “quality is mindlessly reject” phenomena.

    **In a certain sense, I also blame this “lack of accountability” on the Congress that passed the “rush to publication” change. While I grant that such a change makes a certain amount of sense for those applications which are essentially published abroad, forcing publication has had the effect of creating a level of laziness in examination. What recourse do applicants have after the bargain of Quid Pro Quo is preempted by the government taking its quo prior to giving any quid? Sure, there are some “rights” involved – IF claims survive without amendment, but how often does that happen? Far easier – and as David indicates, with no real penalty – to simply drag one’s feet on any application that might cause embarrassment (sound familiar? sort of like the inner-sanctioned, but out of the public eye SAWS program? Let’s not forget that we do not know the extent of such star chamber tactics, as the government did share that SAWS was but one of such undisclosed and hidden mechanisms).

    Lastly, we should also avoid the distraction of looking at the content of patents granted in so far as the content is called into question based on prevailing philosophical views; but rather, we should focus on the examination process that is not impacted by the larger “political” battle. All too often, there is a type of Scapegoating that goes on and the process of examination simply is left to rot (or worse, exacerbated by layering on nonsense from the Supreme Court).

    I step down from my soapbox now.

  4. Curious July 22, 2015 7:41 am

    I honestly have never seen a reversal result in a new rejection – always a NOA.
    Oh … they happen. I’ve seen quite a few lately — particularly in the business methods unit, where every application MUST be subject to an Alice 101 rejection.

  5. Roger Meyer July 22, 2015 8:02 am

    There is one scenario that hardly ever results in a favorable result (re-open or NOA) following a pre-appeal brief request, namely, when the application is being examined by a non-primary examiner supervised by his/her SPE. Those two are already two “no” votes of the three-member panel.

  6. Anon July 22, 2015 10:22 am

    To the other who have received new rejections after reversals: I hope that you are checking for a TC Director’s signature as they must approve these reopenings. (Examiners also need supervisor’s signature if they reopen after an appeal brief has been filed.) In general, I agree with this article about ROI for filing a pre-appeal brief conference. They can be VERY helpful for getting those second pair of eyes. Now that you have all that data, why not provide a distribution for the outcome of different kinds of rejections for each tech center?
    Thanks again!

  7. Curious July 22, 2015 12:26 pm

    I hope that you are checking for a TC Director’s signature as they must approve these reopenings
    LOL … you mean the /{insert signature here}/ electronic signature? I can get the TC Director’s signature on my amendment just as easily.

    BTW — I do check for the signature, but it is, in essence, meaningless since only an incompetent examiner would fail to enter the signature (regardless of whether they actually went to the TC Director).

    Generally, I just appeal rather than go the PABC route. The standard for getting a positive result is very high — you pretty much have to show clear and unmistakable error (e.g., they missed a limitation). Also, the ROI has to be reduced by the fact that you may have to file both a PABC and an appeal (if you fail to prevail with the PABC) when you could have just filed an appeal.

    I have a client who files a LOT of appeals and does data analysis on their prosecution results — with this large sample size and accompanying data analysis, they generally disfavor the filing of a PABC (for what it is worth).

  8. Karl Fazio July 22, 2015 1:01 pm

    “Oh … they happen. I’ve seen quite a few lately — particularly in the business methods unit, where every application MUST be subject to an Alice 101 rejection.”

    Admittedly, my appeals experience has mostly been in 2100 . . .

  9. Micki July 22, 2015 2:32 pm

    David Stein,
    There are a few items of yours that need clarification or correction. (And I do want to point out that while there are some examiners that do bad work (just like there are some lawyers), painting them all with the same broad brush is not fair to the many good ones, be they examiners or lawyers.)

    As to your points:
    * The production credit for an examiner’s answer is the same as for an allowance. And writing up an examiner’s answer is a lot more work than doing an allowance.
    * As to the point of “and yet more credit in presenting the same argument during the Pre-Appeal Conference.”, most Pre-Appeal answers have little to no remarks from the examiner, so this comment of yours does not match reality. Did you mean from the final? Adding additional arguments could be a good way to keep the examiner from doing this.
    * If the examiner is reversed (happens around 50% of the time, IIRC) & they decide to reopen (besides the hoops needed to jump thru to get TC director approval (normally not easy)) there is NO credit for doing a new non-final rejection. The examiner is eating the time to do the work.
    * “So why shouldn’t examiners just love the appeal process?” – Because it is more work for no more production credit than allowing the case. Most examiner really dislike having to deal with appeals. And many really dislike having to do a pre-appeal as well. I have known many that would rather just reopen than have to deal with the panel (not a majority, by any means, but a significant number of examiners).
    * Lastly, the “downside” for the examiner is at least the following:
    1) More work for no more credit;
    2) Reversal/affirmance rates are tracked by the office for the TCs as well as individual AUs. The SPEs can, & I believe will/do, use these to influence some examiners ratings because a high reversal rate by an examiner hurts the SPE & his/her rating/bonus. The high reversal rate can be used to justify a lower quality rating;
    3) If an examiner regularly goes to the board with bad rejections, as well as regularly making bad rejections, they rapidly develop a bad reputation with the lawyers & applicants they regularly deal with (just like lawyers develop good or bad reputations with examiners). People in the same field talk. Human nature. The bad reputation will often lead to the applicant being less receptive to examiner proposals & the rejections being given less credence by the applicant and more pre-appeals (leading to reopenings) and more appeals. Which all means it is that much harder for examiner to make production. (Admittedly something that many examiners do not always realize)

    Now the question as to WHY there are so many appeal & pre-appeals is what needs to be addressed.
    By and large it is not due to the examiner trying to “force applicants into submission and punish applicants who aren’t compliant” (Yes, probably happens in a few cases, but not the vast majority).
    I honestly think that it comes from the same place the office problems have been coming from for quite a while: 1) bad training; 2) SPEs not properly reviewing actions; 3) SPEs not knowing the art they supervise; 4) SPEs being wary of “bad” allowances (I think this has lessened since the infamous Dudas years, but still exists in some); 5) badly written rejections; 6) extremely broad claims being filed (your right to file what claims you want); 7) rejections not clearly explaining how the claim elements are being interpreted. Simply pointing to a paragraph is not sufficient but too many examiners were never trained to do anything more.

    Already gone on too long, but you get the point.

  10. Micki July 22, 2015 2:55 pm

    Anon,
    As to your comments (comment #3) about “unauthorized” searches, the examiner can do as much “extra” searching as he/she feels is necessary. While updating the search may be sufficient in many instances, sometimes the examiner decides that additional search is necessary. It may be because the reversal gave a different take on the claim language. It may be because with 2-3 years more experience the examiner now belter understands how to do a good search or is aware of art they were not previously aware of. It might be because of the change to CPC that gives a better search area. It might be because a different examiner did the original search & the new examiner feels it was defective. There are many legitimate reasons for doing additional search.

    I am not aware of any MPEP citation, law or rule that prohibits doing additional search prior to allowing an application. And I have no idea clear what you mean by “unauthorized” searches “with approval dated after the search dates”. Do you mean doing searches that include prior art that itself published after the filing date of the application? IF so, you are wrong. There is nothing at all with searching like that (using a bad-date reference is a different story). Actually, it is a GOOD idea to NOT limit searches by date. Even if a reference has a “bad” date it can still lead to good prior art (I have done this many times over the years) (e.g., prior art cited in the reference or the inventor of that reference having earlier relevant prior art).

    While there are mentions in the MPEP (for example) of giving “full faith and credit” to earlier searches or “normally” searches will only need to be update, but nothing that indicates that further searches are “unauthorized” or need approval.

    Can you provide support for your assertions that some searches are “unauthorized” or need some sort of special approval?

  11. Curious July 22, 2015 5:40 pm

    I am not aware of any MPEP citation, law or rule that prohibits doing additional search prior to allowing an application.
    M.P.E.P. 1214.04: “The examiner should never regard such a reversal as a challenge to make a new search to uncover other and better references. This is particularly so where the application or ex parte reexamination proceeding has meanwhile been transferred or assigned to an examiner other than the one who rejected the claims leading to the appeal. The second examiner should give full faith and credit to the prior examiner’s search.

    If the examiner has specific knowledge of the existence of a particular reference or references which indicate nonpatentability of any of the appealed claims as to which the examiner was reversed, he or she should submit the matter to the Technology Center (TC) Director for authorization to reopen prosecution under 37 CFR 1.198 for the purpose of entering the new rejection.”

    While there is no outright prohibition, the MPEP clearly indicates that additional searches are disfavored. Otherwise, what would be the purpose of the above language?

  12. David Stein July 22, 2015 8:20 pm

    Micki:

    > The production credit for an examiner’s answer is the same as for an allowance. And writing up an examiner’s answer is a lot more work than doing an allowance.

    The Examiner’s Answers that I have seen are 100% recycled material from the office actions. I don’t count Ctrl-C/Ctrl-V as “a lot more work.”

    > …and yet more credit in presenting the same argument during the Pre-Appeal Conference.”, most Pre-Appeal answers have little to no remarks from the examiner, so this comment of yours does not match reality.

    I didn’t mean *in* the panel decision – I meant: relaying the argument presented in the last office action to the other members of the board.

    > Most examiner really dislike having to deal with appeals. And many really dislike having to do a pre-appeal as well.

    Apparently, they don’t dislike it enough to avoid the process.

    Given the examiner-deferential attitude of the Board, I only appeal cases with a high chance of success – where anyone with even a basic grasp of the technology would find the examiner’s position not just technically incorrect, but completely unreasonable. And yet, my appeal rate is considerably higher than the “this should almost never happen” incidence that one would expect.

    Just today, I was sent an unsolicited report from one of the several “examiner stats tracking” services – indicating that an examiner for one of my cases has an 83% reversal rate at the board. Appeals are clearly not a deterrent for this person.

    > Reversal/affirmance rates are tracked by the office for the TCs as well as individual AUs. The SPEs can, & I believe will/do, use these to influence some examiners ratings because a high reversal rate by an examiner hurts the SPE & his/her rating/bonus. The high reversal rate can be used to justify a lower quality rating.

    The recent report by the Office of the Inspector General demonstrates, in no uncertain terms, that examiners’ ratings are 99.95% based on meeting deadlines and internal compliance. Even examiners that demonstrate clear quality errors – i.e., OAs that are found materially defective by the OPQA – somehow manage to score “above average” and “outstanding” performance ratings that garner bonuses and promotions.

    > If an examiner regularly goes to the board with bad rejections, as well as regularly making bad rejections, they rapidly develop a bad reputation with the lawyers & applicants they regularly deal with (just like lawyers develop good or bad reputations with examiners).

    Many of the examiners that I’ve deal with are primarily concerned with their title, GS rating, production bonuses, and perks. The primary factors of their reputation among their peers are their rank, production, and whether or not they reach the allowance rate that they and their art unit want. “Reputation among applicants” does not exist anywhere on that list.

    I don’t mean *all* examiners – I have met many who are conscientious, reliable, dedicated to quality, and persuadable. Unfortunately, they are in the minority.

    > The bad reputation will often lead to the applicant being less receptive to examiner proposals & the rejections being given less credence by the applicant and more pre-appeals (leading to reopenings) and more appeals. Which all means it is that much harder for examiner to make production.

    Examiners meet production by dictating what they’re willing to allow, and kicking out final office actions (which require RCEs) for applicants who don’t comply with their demands. Appeals, and the prospect of having to restart prosecution without production credit, would be a deterrent – *if* the costs and delays of appealing weren’t so unreasonably high as to be pretty rare.

    > 4) SPEs being wary of “bad” allowances (I think this has lessened since the infamous Dudas years, but still exists in some)…

    I agree with you here, but it’s only half of the picture.

    Incorrect *allowances* are usually preceded by incorrect *rejections*. When an examiner fails to understand the technology and burns up prosecution time citing irrelevant references that are overcome, the examiner faces pressure to allow the case. So the case eventually gets allowed even though the examiner hasn’t conducted an accurate search or rejected it in view of the best references: it gets allowed over the art of record, which is utterly irrelevant.

    It’s astounding to me how poorly this relationship is understood, both inside and outside the PTO. And the solution is obvious: there needs to be cultural change within the PTO, in the form of serious repercussions for issuing technically flawed or unreasonable OAs. “Broadest Reasonable Interpretation” is routinely used to a horrid extent – it needs to be dialed back, and replaced with: “if your references are bad, find better references.” Stop wasting applicants’ time, stop wasting the Board’s time, and stop wasting *your own* time patching over bad references with gut instinct and supposition.

  13. Curious July 22, 2015 10:28 pm

    Given the examiner-deferential attitude of the Board, I only appeal cases with a high chance of success – where anyone with even a basic grasp of the technology would find the examiner’s position not just technically incorrect, but completely unreasonable.
    Actually, I find the Board’s positions to be mostly random — well, it really depends upon the APJ writing the opinion. Some of my best arguments have been disregarded, yet I’ve won some coin flips as well. Frankly, if I think I have an argument that “should” win, I’ll appeal. As we very well know, a lot of appeals don’t make it to the Board to begin with. As such, likelihood of success at the Board shouldn’t be the only factor to consider when appealing.

    Stop wasting applicants’ time, stop wasting the Board’s time, and stop wasting *your own* time patching over bad references with gut instinct and supposition.
    I agree. Unfortunately, the Board reinforces this bad behavior be affirming rejections that should have never been made in the first place. They bend over backwards to adopt any claim construction (no matter how unreasonable) presented by the Examiner. They’ll make up facts (and legal rationales) not presented by the Examiner (they do this VERY frequently). They’ll misrepresent Appellant’s arguments. They’ll ignore Appellants’ arguments. Moreover, when you call them on the carpet, they’ll double down with even worse arguments. The worse Board analysis can be found in Decisions on Request for Rehearing, in which they’ll throw anything against the wall to support their prior bad decision (because they know that only a very small percentage of Board decisions get appealed to the Federal Circuit).

    If you want to clean up Examiner behavior, let the Board come down hard on bad rejections and have Examiner (and probably more importantly, their SPEs) be held accountable. When that happens, they’ll be less appeals.

  14. Anon July 22, 2015 11:55 pm

    David,

    I could not say that better. Thank you.

  15. Anon July 23, 2015 7:18 am

    Micki,

    Compact prosecution and the fact that 37 CFR 41.54 provides that jurisdiction returns to the examiner for the express purpose of carrying the Board’s decision into effect mean that you do not get to arbitrarily open up prosecution again with a new search. The distinction between a new search and a “refreshing” search should be strictly adhered to, and is often not so done. The permission factor comes in as a control mechanism, and I have seen repeated violations on a single application after several successful appeals with the examiner taking NEW bites at the apple, with dated searches on record, and with “approval” to perform searches clearly provided AFTER the searches have already been made.

    If the world operated under your view, then NO application could ever be granted because an examiner would be fully empowered to “save up” rejections and serve them out piecemeal.

  16. Night Writer July 23, 2015 8:14 pm

    I would just say that I have won a large percentage of my appeals. The board seems to be pretty fair so far. Worried about the Google effect.

    Also, I have seen a lot of allowances based on whatever the board reverses. It is rare –in my experience–for the examiner to re-open. The examiner seems to happy to get rid of it with the approval of the board. But, we all know that experiences at the PTO can be vastly different.

  17. JNG July 27, 2015 3:22 pm

    Karl/Kate

    Did you track any data on how these folks who proceeded to full appeal (after losing at PABC) fared at the PTAB? When pre-appeals started, I was a big fan until about the 10th one in a row where the “panel” just seemed to rubber stamp the Examiner’s logic, no matter how far fetched. It was just a waste of time, so I stopped doing them. For those cases that I rolled forward, I’m fairly sure the reversal rate was >75% on least some of the issues. I fear there is some buddy-buddy behavior going on where the panelists are loathe to criticize one of their own.